08 Jul Open the Floodgates: The Supreme Court Sides with Scandalous Trademark

Last week, the United States Supreme Court handed down a decision that is sure to cause a stir at the US Patent and Trademark Office (USPTO). A divided court ruled in favor of the clothing brand ‘FUCT,’ stating that the First Amendment to the Constitution prevents the USPTO from denying trademark protection to “immoral” or “scandalous” marks.

If this story sounds familiar, you may have read our earlier blog post providing a detailed background of the case.

A Quick Refresher

In case you missed it, Iancu v. Brunetti is a case that has been moving its way through the courts for years. Erik Brunetti, a clothing designer and owner of the brand “FUCT,” submitted an application to trademark his clothing brand’s name. The USPTO rejected his request on the grounds that the name is “immoral” or “scandalous.” To support their argument, the USPTO pointed to the Lanham Act, the law that governs trademark registration. In fact, that law does specifically prohibit granting trademark protection to marks that are too scandalous. Mr. Brunetti appealed.

The Question

By the time this matter made it to the Supreme Court, the question was fairly simple: does the Lanham Act prohibition on granting trademarks to “immoral, deceptive, or scandalous” marks conflict with the First Amendment protection of free speech? Although the legal question was simple, the Supreme Court justices did seem to labor over the impact this decision could have on future trademark applications. What if this decision opens the floodgates for even worse language?

The Answer

In 2007, the Supreme Court was faced with a similar question. Matal v. Tam asked whether denying a “disparaging” mark trademark protection violated the First Amendment. In that case, the Court sided with the Constitution. On June 24, 2019, the judges again decided on the side of free speech. The majority decision (6-3), written by Justice Elena Kagan, stated that “scandalous and immoral” is too broad a prohibition on speech.

The majority determined that the Lanham Act, which has governed trademark law since 1946, got it wrong: the USPTO should not have broad authority to determine what is “immoral or scandalous.”

…With a Few Reservations

Chief Justice John Roberts Jr. dissented in part (joined by Justice Stephen Breyer), writing that the Lanham Act’s use of the word “scandalous” wasn’t related to the ideas conveyed by the mark, but rather to the mode of expression itself. To him, the problem with the trademark “FUCT” isn’t the moral concept, but the vulgarity of the language.

Justice Sonia Sotomayor also wrote a partial dissent (also joined by Justice Stephen Breyer), warning, “The court’s decision today will beget unfortunate results…The government will have no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane, or obscene words and images imaginable.”

Not Too Sure about Your Brand?

So, what does this mean for you? If you are a business owner seeking to protect intellectual property that might be seen as scandalous, immoral, vulgar, disparaging, or any other qualification that might prove troublesome for trademark protection, let’s talk. Click here to schedule an appointment at The Brand Protected. We are here for you.